On May 4, 2011, The United States Congress' House of Representatives Committee on the Judiciary, Subcommittee on Intellectual Property, Competition and the Internet (the "Subcommittee") held its ICANN Generic Top-Level Domains ("gTLD") Oversight Hearing in order to receive testimony from various stakeholder witnesses regarding the new gTLD program. Witnesses included Kurt Pritz, Senior Vice President, Stakeholder Relations of ICANN; Mei-lan Stark, Senior Vice President, Intellectual Property, Fox Group Legal (and Treasurer of the International Trademark Association); Steven Metalitz, Counsel to the Coalition for Online Accountability; and representatives from several other Internet stakeholder groups. This update will highlight the issues of significant interest to intellectual property rightsholders as covered in yesterday's hearing.
Discussion of Intellectual Property Concerns
Testimony and questioning centered heavily on whether ICANN had in place adequate mechanisms to protect trademark holders' rights in the new gTLD space, including concerns around trademark infringement, copyright abuses, counterfeiting, and other cybercrimes. With the possibility of hundreds of new TLDs entering the root as soon as 2013, members of the Subcommittee asked witnesses to describe their chief concerns pertaining to the potential need to enforce against these cybercrimes in a vastly larger Internet space. For example, Ms. Stark testified that her organization, Fox Entertainment Group, would potentially be forced to defensively register numerous second-level domains across the emerging new TLDs to protect as many as 300 different priority brands. Ms. Stark further indicated that adequate enforcement in the new gTLD spaces would potentially require the expenditure of up to millions of dollars for domain name registrations alone, along with additional staff to monitor the new gTLD spaces and manage the expanded domain name portfolio. This one example also highlights the potential need for brand owners to begin allocating additional capital to combat infringing domains through other enforcement efforts, dispute resolution proceedings (including the new URS or UDRP), or litigation.
Discussion of Trademark Clearinghouse Concerns
Concerns about protection of trademark holders' rights led to a detailed discussion of the efficacy of the Trademark Clearinghouse ("Clearinghouse"), one of the primary rights protection mechanisms proposed for the new gTLD program. The Clearinghouse is to function as a central repository where trademark owners can submit their marks, thereby conferring some protection benefits for a limited period in connection with the launch of each new gTLD. The Trademark Claims Service function of the Clearinghouse would notify trademark holders of potentially infringing second-level domain registrations in new gTLDs, and would also serve as the database of marks eligible for participation in the sunrise periods mandated for each new gTLD. Several members of Congress and witnesses questioned whether the proposed Trademark Claims Service would be effective enough to curtail the need for defensive registrations in the new gTLD space. Indeed, this discussion both dovetailed and underscored current discussions among ICANN stakeholders about whether the Trademark Claims Service function should be extended indefinitely, beyond the launch period.
Next Steps for Congress
With ICANN set to approve the final version of the new gTLD Applicant Guidebook ("AGB") at a pre-scheduled special session meeting of the ICANN Board in Singapore on June 20, 2011, several members of Congress stressed the need for ICANN to take very serious note of the trademark holders' interests at stake before proceeding with the program's launch. Indeed, at various points, the prospect of calling a further Congressional hearing to order on this subject was raised. Congressman Watt requested that each witness follow up with him directly with information on the benefits of the program. The Subcommittee also requested that Mr. Pritz submit certain ICANN financial details relating to executive salaries, bonus amounts and structure, as well as expected program revenue. Finally, the Subcommittee reserved the right to send additional written questions to any of the witnesses.
Conclusion
Though unlikely to affect the planned June 20, 2011 approval of the AGB and ICANN's current timeline for setting the new gTLD program in motion, this Congressional hearing is a firm indication that brand owners, trademark holders, and other stakeholders are becoming increasingly aware of the fact that the Internet landscape is about to change. Indeed, the Congressional hearing has provided ICANN with a renewed call to consider its final changes to the AGB carefully, ensuring that trademark holders' rights are sufficiently protected. In addition, the Congressional hearing should also serve to remind trademark owners that they should be taking preliminary steps to protect their rights in the new gTLD space by developing a strategy and budget for defensive domain registrations and planning to participate in the Clearinghouse.
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